PIZZAIOLO Design Mark Confusing With LA PIZZAIOLLE Word Mark

In Les Restaurants La Pizzaiolle Inc v Pizzaiolo Restaurants Inc, the Federal Court (Court) overturned the Trade-mark Registrar’s decision and determined that the Applicant’s registered mark LA PIZZAIOLLE was confusing with the Respondent’s proposed design mark PIZZAIOLO.

Since the early 1980s, the Applicant has operated several pizzerias in the Montreal region under the trade-name LA PIZZAIOLLE, or the variant PIZZAIOLLE. The Respondent has operated several pizzerias in the Toronto region under the trade-name PIZZAIOLO since the early 2000s.

The Applicant opposed the Respondent’s trade-mark applications for PIZZAIOLO, in word form (Word Mark) and design form (Graphic Mark). The Registrar refused the Word Mark on the basis that it was confusing with the Applicant’s LA PIZZAIOLLE mark, but allowed the Graphic Mark. The Applicant appealed the Registrar’s decision to allow the Graphic Mark.

The Court found that the Registrar disregarded the principles set out inMasterpiece Inc v Alavida Lifestyles Inc, which state that the owner of a registered mark is granted the right to use the words that constitute the mark in any size and with any style of lettering, colour or design. The Court found that, in light of Masterpiece, the Applicant is entitled to use the word PIZZAIOLLE in a size, style of lettering, colour and design or graphic form that would render it the same or very similar to the Graphic Mark PIZZAIOLO, and that the marks were therefore confusing.